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The damages under the Patent Law are governed by the doctrine of negligence liability, and a patentee shall not elect to apply Article 184, Paragraph 2 of the Civil Code and request the infringer to assume the burden of proof that he was not negligent in

Pursuant to the Patent Law before amendment, the damages that may be claimed by a patentee for invention patent infringement shall also apply mutatis mutandis to utility model patent infringement. Court practice hold that since they are applied under tort damages, this requires willfulness or negligence of the wrongdoer. In this regard, the Intellectual Property Court rendered the 102-Min-Zhuan-Shang-36 Civil Decision of May 22, 2014 (hereinafter, the "Decision"), holding that the doctrine of negligence liability should be adopted for the damages provisions in the Patent Law before amendment, according to their legislative objectives, in line with the provisions of the first part of Article 184, Paragraph 1 of the Civil Code. A patentee is not allowed to apply Article 184, Paragraph 2 of the Civil Code directly to request the actor to assume the burden of proof that he was not negligent in the patent infringing act.

According to the facts underlying this Decision, Individual A conducts work in the creative research and development of ceramic products and obtained a utility model patent for "ceramic electric heaters" (hereinafter, the "Patent-in-suit"). He found that there are products with functions identical with those in the Patent-in-suit (hereinafter, the "Infringing Products at Issue") in the market and that the Infringing Products at Issue have exactly the same functions, design and structure as those of his patented products with the only differences in shape and patterns. Individual A asserted that Individual B had worked at an OEM manufacturer of Individual A and had learned about the structure of the products practicing the Patents-in-suit. After Individual B left the manufacturer, he was employed by Cheng Tse Co. and jointly counterfeited the products which practice the Patents-in-suit with Cheng Tse Co. for manufacture and sales to generate profits, thus infringing Individual A's intellectual property rights and commercial interest.

It was first pointed out in the Decision that the Infringing Products at Issue fall within the scope of equivalence in the claims of the Patent-in-suit. To wit, the Infringing Products at Issue use substantively identical technical means to achieve substantively identical functions and results. Therefore, it should be deemed that there is no substantive difference between the two. Therefore, the Decision further affirmed Individual A's right to seek damages. Under the Patent Law before amendment, which provides that "when an invention patent is infringed, the patentee may claim for damages suffered therefrom," and according to court practice in the past, such damages are applied under tort damages by nature and require willfulness or negligence of the wrongdoer. This pattern also applies to scenarios where a utility model is infringed. However, can the patentee assert that the infringer should have the burden of proof that he was not negligent in his behavior in accordance with Article 184, Paragraph 2 of the Civil Code?

According to the Decision, although the Patent Law grants exclusivity and noninfringeability to a patentee, still the Patent Law does not impose any specific duty of care (including potential infringers). In addition, to avoid severely heavy burden of care upon the social public, Articles 79, 108 and 129 of the Patent Law before amendment require patentees to mark patent numbers on patented articles and their packages and failure to do so will preclude the claims for damages. Therefore, it is perceived in the Decision that the legislators have properly allocated the specification obligation of patentees and the cost of avoiding patent infringement assumed by the social public when the Patent Law was enacted. Therefore, if a patentee is allowed to directly apply Article 184, Paragraph 2 of the Civil Code to request an infringer to assume the burden of proof that he was not negligent in the patent infringing act without first proving the willfulness or negligence of the infringer, the requirement that the patent numbers should be marked under the above-mentioned Patent Law would become redundant in obvious contradiction with the legislators' objectives. To wit, the damages provision in the first part of Article 84, Paragraph 1 of the Patent Law before amendment should be governed by the doctrine of negligence liability in line with the first part of Article 184, Paragraph 1 of the Civil Code, and Individual A is still required to assume the burden of proof that Individual B was willful or negligent in infringing the Patent-in-suit.

According to the Decision, relevant evidentiary materials were sufficient to prove Individual B's willfulness in infringing the Patent-in-suit, and the Individual A's damages claim was further affirmed. Under the current law, such circumstances have been clearly provided for under Article 96, Paragraph 2 of the Patent Law, which provides that in case of willful or negligent patent infringement, an invention patent holder may claim damages. This also helps reduce controversies.

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